Hello, ladies and gentlemen.
I’m Christy Li, host of today’s
debate on trademark opposition procedure.
We have two contestants today from world famous law firms
who were winners in the 2018 debate season. Let us welcome Mr P
and Mr A to the stage.
Mr P and Mr A have experience in plenty of countries, and
they have both received awards and accolades. For example, Mr A
has had wins in Japan and Germany, and people there have hailed
him as the father of trademark opposition procedure. Meanwhile,
Mr P does not show weakness, and is fully endorsed by China and
Today the debate relates to a very familiar but
controversial topic in worldwide trademark practice –
whether opposition should occur before trademark registration
or after trademark registration. As this is an informal debate,
there will no ballot process today. Let us start with Mr
Mr A: As far as we know, the reason a
trademark proprietor files a trade mark application is to
acquire an exclusive right, so that they can use the trademark
in commercial activities.
Opposition after registration enables trademark proprietors
to register a trademark earlier and facilitates the expansion
of their business. This is because, for countries that adopt
the method of opposition after registration, trademarks will be
granted registration without a publication period, which ranges
from one month to several months. After the trademarks are
registered, anyone/an interested party can file an opposition
during the prescribed period.
Secondly, the function of trademarks is to help the relevant
public distinguish goods/services sources. Where marketing
exists, there will be competition. For opposite parties,
creating obstacles in the way of trademark registration is a
great weapon. Despite clearly knowing that an opposed trademark
does not collide with its prior right, nor is the opposition in
the public interest, parties still raise an opposition.
In most jurisdictions, the office usually takes more than 12
months to finish examination of an opposition case, and
initiating an opposition could result in delaying registration
for over one year. How should such pre-emptive opposition be
solved? Opposition after registration could eliminate the risk
of bad faith opposition, for the reason that the trademark has
been granted registration before the opposition period and
cannot be delayed due to the opposition procedure.
Another advantage of opposition after registration that I
have to stress is that it enables trademark proprietors to
acquire registration certificates earlier, which is a stepping
stone in commercial transactions and infringement defence. When
running a business, a registration certificate is the only
evidence to show ownership, especially for famous websites,
like Amazon, Tmall, JD, etc. Without it, all business
activities bear the risk of infringements. A registration
certificate could show ownership in infringement cases.
By comparison with this situation, opposition before
registration delays registration and not only does harm to
business activities, but also limits the ability to sue others
for infringement. All in all, opposition after registration is
a beneficial statutory procedure for trademark proprietors.
Host: Mr A set forth the advantages of
opposition after registration, as well as some disadvantages of
opposition before registration elaborately. Now let us see how
Mr P will fight back.
Mr P: I do not deny that the earlier the
registration date, the better. But, you have to compare the
short term with a stable status. In my opinion, stability plays
the most important role in business. If a trademark can be
opposed any time after it is registered, what is the purpose of
its registration? Only if the trademark is registered and
overcomes the obstacles raised by prior cited marks, can it be
registered with a low risk of attack. This is a true
In most legal procedures, public interest overrides private
rights and this is the case for trademarks too. When setting up
the statutory procedure of opposition, private rights as well
as public interest should both be taken into consideration. The
purpose of opposition is to take advice from the public, and to
carry through trademark right verification publicly, fairly and
authentically. Temporary registration without public opinion
does not strictly qualify as ownership of a trademark right.
Additionally, opposition after registration is a waste of
marketing and judicial resources.
In the first place, trademark owners will fully prepare to
enter a market for the trademark, but how does it feel when
they hear that their registered mark is opposed by third
parties and may be rendered invalid? The worst aspect of this
is that their mark can be rejected from registration or
invalidated after their marketing preparation. It is not hard
to conclude that all the preparation is a waste of time and
money. In a similar way, jurisdictions have used up time and
energy checking and issuing a registration certificate, but
have to cancel it after the mark is rejected from registration
due to opposition.
To conclude, when deciding whether opposition should take
place before or after registration, factors relating to private
and public interests should be taken into account, and
opposition before registration is preferable to opposition
Host: Ok, time is over for Mr P. Both
contestants expressed themselves logically and reasonably, and
both procedures have precedents throughout the world, proving
that they have pros and cons. It seems they are equally
As long as it suits the local situation, either method is
acceptable and can be adopted.
When deciding whether it is appropriate or not, factors like
the annual filing numbers in the local district, the degree of
bad faith, the opposition percentage etc. should all be taken
into account. No one is born wise or learned. The purpose of
discussion is not necessarily for achievement, but to motivate
more interested people to join us so that we can find the most
effective and beneficial way to manage and mold a healthy and
sophisticated intellectual property market.